Validation agreement between the Republic of Moldova and the European Patent Organisation SUMMARY

Transcription

1 CA/17/13 Orig.: en Munich, SUBJECT: SUBMITTED BY: ADDRESSEES: Validation agreement between the Republic of Moldova and the European Patent Organisation President of the European Patent Office Administrative Council (for decision) SUMMARY This document contains a draft validation agreement with the Republic of Moldova. The Council is requested to authorise the President to conclude it. CA/17/13 e

2 - I - TABLE OF CONTENTS Subject Page I. STRATEGIC/OPERATIONAL 1 II. RECOMMENDATION 1 III. MAJORITY NEEDED 1 IV. CONTEXT 1 V. ARGUMENTS 1 VI. ALTERNATIVES 2 VII. FINANCIAL IMPLICATIONS 2 VIII. LEGAL BASIS 2 IX. DOCUMENTS CITED 2 X. RECOMMENDATION FOR PUBLICATION 2 ANNEX 1 VALIDATION AGREEMENT 3 CA/17/13 e

3 I. STRATEGIC/OPERATIONAL 1. Strategic II. RECOMMENDATION 2. The Administrative Council is requested to authorise the President to conclude the annexed draft agreement on behalf of the European Patent Organisation. III. MAJORITY NEEDED 3. Three quarters IV. CONTEXT 4. At its 130th meeting, the Council authorised the President to enter into negotiations with the Republic of Moldova on a validation agreement (see CA/101/11), with the resulting draft agreement being submitted in due course for Council approval. V. ARGUMENTS 5. In January 2013, the EPO and the Republic of Moldova reached agreement on the text of a validation agreement, including an attachment containing model provisions for national implementation of the validation system. 6. The text of the Agreement corresponds to the text of the validation agreement between Morocco and the European Patent Organisation approved by the Council in 2010 (see CA/101/10 Rev. 1) as well as to the text of the validation agreement between Tunisia and the European Patent Organisation approved by the Council in 2012 (see CA/92/12). 7. After signature, the Agreement would enter into force on the date to be determined by an exchange of notes between the President of the EPO and the Director General of the AGEPI (State Agency on Intellectual Property of the Republic of Moldova), following the enactment by the Republic of Moldova of legal provisions on the implementation of the validation system as well as mutual notification concerning the completion of the internal procedures necessary for the entry into force of the Agreement (Article 11 of the draft agreement). CA/17/13 e 1/13

4 VI. ALTERNATIVES not to approve the annexed draft agreement to approve it in amended form to postpone the matter to a later Council meeting. VII. FINANCIAL IMPLICATIONS 8. Under Article 6 of the draft agreement the amount of the validation fee and the proportion thereof to be kept by the EPO shall be laid down upon an agreement between the EPO and the AGEPI. This includes the possibility for future changes of the amount and the proportion of the initially fixed fee and its future adaptation in the framework of the regular biennial fee adjustment. 9. It can be assumed that the possibility to validate European patents in the Republic Moldova will be an attractive option for applicants. Thus the number of validation requests for this country is expected at a rate similar to the number of extension requests received currently for Bosnia and Herzegovina, i.e. about per year. Since the validation agreement will apply only to European patent applications filed after its entry into force and validation fees are paid two years after filing (on average), the EPO could expect additional validation-fee income some two years after the validation agreement with the Republic of Moldova enters into force. As regards the costs of the operation of the validation system it has to be pointed out that, due to the identical procedural arrangements as applicable to the existing "extension system" (see e.g. CA/74/08), no considerable additional cost increase is to be expected. VIII. LEGAL BASIS 10. Article 33(4) EPC in conjunction with Article 35(2) EPC. IX. DOCUMENTS CITED 11. CA/101/10 Rev. 1, CA/101/11, CA/92/12, CA/74/08 X. RECOMMENDATION FOR PUBLICATION 12. Yes CA/17/13 e 2/13

5 ANNEX 1 VALIDATION AGREEMENT AGREEMENT BETWEEN THE GOVERNMENT OF THE REPUBLIC OF MOLDOVA AND THE EUROPEAN PATENT ORGANISATION ON VALIDATION OF EUROPEAN PATENTS (VALIDATION AGREEMENT) CA/17/13 e 3/13

6 THE GOVERNMENT of THE REPUBLIC OF MOLDOVA, represented by Mrs. Lilia Bolocan, Director General of the State Agency on Intellectual Property of the Republic of Moldova (hereinafter referred to as "the Office"), and THE EUROPEAN PATENT ORGANISATION (hereinafter referred to as "the Organisation"), represented by Mr. Benoît Battistelli, President of the European Patent Office (hereinafter referred to as "the EPO") HAVING REGARD to the Convention on the Grant of European Patents of 5 October 1973 as last revised by the Act revising the European Patent Convention of 29 November 2000 (hereinafter referred to as "European Patent Convention") and, in particular, Article 33(4) thereof, to the Law of the Republic of Moldova on the Protection of Inventions No. 50-XVI of 7 March 2008, TAKING INTO ACCOUNT that the Law of the Republic of Moldova on the Protection of Inventions provides for a level of protection similar to that existing in the member states of the Organisation, that the Republic of Moldova will provide for a system enabling the effects of European patent applications and patents to be validated on request in its territory by introducing in its national law provisions implementing the validation system (hereinafter referred to as "validation system"), WHEREAS the Republic of Moldova is a party to the Patent Cooperation Treaty and has designated the EPO as International Searching and Preliminary Examining Authority under the said Treaty, RECOGNISING the need fully to apply the standards of the Agreement on Trade-Related Aspects of Intellectual Property Rights (hereinafter referred to as TRIPs Agreement ), CA/17/13 e 4/13

7 NOTING the request of the Republic of Moldova for support by the EPO in implementing the validation system, CONVINCED that the establishment of a validation system between the Organisation and the Republic of Moldova is of mutual interest and will strengthen the protection of industrial property in the Republic of Moldova and, at the same time, make the European patent system more attractive, that the validation system will contribute to the achievement of the goals set by the Eastern Partnership as part of the EU's European Neighbourhood Policy and will support the gradual integration of the economy of the Republic of Moldova in the EU internal market, in accordance with its European integration aspirations, HAVE AGREED AS FOLLOWS: Article 1 Subject of the Agreement The contracting parties shall co-operate within the scope of this Agreement to develop an efficient system of validation of European patents in the Republic of Moldova. Article 2 Technical and legal assistance Within the scope of its capabilities the Organisation shall provide the Republic of Moldova with technical and legal assistance necessary for the implementation of the validation system. CA/17/13 e 5/13

8 Article 3 Legal and administrative co-operation (1) The contracting parties shall regularly exchange information on legal developments relating to their respective patent system. (2) If requested by the Republic of Moldova to do so, the Organisation shall within the scope of its capabilities give advice on proposals for enacting or amending legal provisions relating to the Republic of Moldova's patent system. Article 4 Processing of requests for validation (1) The EPO shall accept, process and publish any request for validation of European patents in the Republic of Moldova and shall communicate to the State Agency on Intellectual Property of the Republic of Moldova any necessary information regarding the proceedings relating to the European patent applications and patents concerned. (2) Within the scope of its capabilities, the EPO shall on request give assistance to the Office by communicating any other useful information. Article 5 Information concerning validated European patents The Office shall inform the EPO of the legal status of any validated European patent, in particular of its being void, of its lapse, renunciation, limitation or revocation. Article 6 Financial matters For each request for validation a validation fee shall be due to the EPO. The President of the EPO shall lay down the amount of the validation fee and the proportion thereof to be kept by the EPO upon an agreement between the EPO and the Office. CA/17/13 e 6/13

9 Article 7 Joint committee (1) A joint committee shall be set up to discuss all matters arising from this Agreement and its implementation. The committee shall be composed of representatives of the EPO and the Office. Representatives of other government bodies of the Republic of Moldova involved in or directly affected by the implementation of this Agreement may be consulted. (2) The committee shall meet on the initiative of either the Director General of the Office or the President of the EPO. The agenda for each meeting, the venue and date thereof, shall be fixed by agreement between the two Offices. Article 8 Implementation of the Agreement (1) The tasks incurred by the contracting parties in consequence of this Agreement shall be carried out by the EPO and the Office. The EPO may entrust individual tasks under Article 2 of this Agreement to the patent offices of the EPC contracting states, subject to their consent. (2) The details of the implementation of this Agreement shall be fixed by agreement between the Director General of the Office and the President of the EPO. Article 9 Amendment of the Agreement At the request of the Organisation or of the Government of the Republic of Moldova, the contracting parties shall enter into negotiations on amending this Agreement. CA/17/13 e 7/13

10 Article 10 Duration of the Agreement (1) This Agreement shall be concluded for a period of five years, and shall be extended for further five-year periods unless a contracting party objects to this in writing no later than six months prior to the end of the five-year period in force. (2) Notwithstanding paragraph 1, this Agreement may be terminated at any time in writing by either contracting party; termination shall take effect one year after receipt by the other party of the notice of termination, unless the said notice specifies a longer period or the contracting parties agree on a shorter period. (3) If this Agreement is terminated, Articles 4 to 6 shall continue to apply to any European patent application in respect of which a request for validation has been filed prior to termination, and to any European patent granted thereon. Article 11 Entry into force The date of entry into force of this Agreement shall be determined by an exchange of notes between the Office and the EPO, following the enactment by the Republic of Moldova of provisions in accordance with those attached to this Agreement as well as mutual notification concerning the completion of the internal procedures necessary for the entry into force of this Agreement. Done at... on... in two originals in the Moldovan, English, French and German languages, each text being equally authentic. For the Government of the For the European Patent Organisation Republic of Moldova Lilia BOLOCAN Director General of the State Agency on Intellectual Property Benoît BATTISTELLI President of the European Patent Office of the Republic of Moldova CA/17/13 e 8/13

11 ATTACHMENT Model provisions governing the validation of European patents in the Republic of Moldova Article 1 Validation of European patents (1) A European patent application and a European patent validated in the Republic of Moldova shall, subject to the following provisions, have the effect of and be subject to the same conditions as a national patent application and a national patent under the Law of the Republic of Moldova on the Protection of Inventions (LPI). (2) For the purposes of these provisions, (a) "European patent application" means an application for a European patent filed under the European Patent Convention (hereinafter referred to as "EPC"), as well as an international application filed under the Patent Cooperation Treaty (hereinafter referred to as "PCT") for which the European Patent Office (hereinafter referred to as "EPO") acts as designated or elected Office and in which the Republic of Moldova is designated; (b) "validated European patent" means a European patent granted by the EPO on a European patent application in respect of which validation in the Republic of Moldova has been requested; (c) "national patent application" means a patent application filed under the LPI with the State Agency on Intellectual Property of the Republic of Moldova (hereinafter referred to as "the Office"); (d) "national patent" means a patent granted on a national patent application. CA/17/13 e 9/13

12 Article 2 Request for validation (1) A European patent application and a European patent granted on such application shall be validated in the Republic of Moldova at the request of the applicant. The request for validation shall be deemed to be filed with any European patent application filed on or after the date on which the validation agreement between the Government of the Republic of Moldova and the European Patent Organisation enters into force. (2) The Office shall publish any request for validation as soon as possible after it has been informed by the EPO that the prescribed validation fee has been paid, but not before the expiry of 18 months from the filing date or, if priority has been claimed, the earliest priority date. (3) The request for validation may be withdrawn at any time. It shall be deemed withdrawn where the prescribed validation fee has not been paid in time or where the European patent application has been finally refused, withdrawn or deemed withdrawn. The Office shall publish this as soon as possible if the request for validation has already been published by it in accordance with paragraph 2. Article 3 Validation fee (1) The validation fee under Article 2(2) shall be paid to the EPO within six months of the date on which the European Patent Bulletin mentions the publication of the European search report, or, where applicable, within the period for performing the acts required for entry into the European phase of an international application within the meaning of Article 1, paragraph 2(a). (2) The validation fee may still be validly paid within an additional period of two months of expiry of the relevant period referred to in paragraph 1, provided that a 50% surcharge is paid within this additional period. (3) For the payment of validation fees the EPO Rules relating to Fees shall apply mutatis mutandis. Validation fees validly paid shall not be refunded. CA/17/13 e 10/13

13 Article 4 Effects of European patent applications (1) A European patent application which has been accorded a filing date shall be equivalent to a regular national patent application, where appropriate with the priority claimed for the European patent application, whatever its outcome may be. (2) A published European patent application shall provisionally confer the same protection as is conferred by a published national patent application as from the date on which a translation of the claims of the published European patent application into Moldovan has been made available to the public by the Office. (3) The European patent application shall be deemed not to have had ab initio the effects referred to in paragraph 2 where the request for validation is withdrawn or deemed withdrawn. Article 5 Effects of European patents (1) A validated European patent shall, subject to paragraphs 2 to 7, confer as from the date of publication of the mention of its grant by the EPO the same rights as would be conferred by a national patent under the Moldovan Law on the Protection of Inventions. (2) Within three months of the date on which the mention of the grant of the European patent has been published, the proprietor of the patent shall furnish to the Office the translation into Moldovan of the specification and pay the prescribed fee for publication. (3) If, as a result of an opposition or a request for limitation filed with the EPO, the European patent is maintained in amended form, the proprietor of the patent shall, within three months of the date on which the mention of the decision to maintain the European patent as amended or to limit it was published, furnish to the Office the translation into Moldovan of the amended claims and pay the prescribed fee for publication. CA/17/13 e 11/13

14 (4) Where the text of claims contains reference signs used in the drawings, such drawings shall be attached to the translation referred to in paragraph 2 or 3. (5) The Office shall publish any translation duly filed under paragraph 2 or 3 as soon as possible. (6) If the translation specified in paragraph 2 or 3 is not filed in due time or the publication fee is not paid in due time, the validated European patent shall be deemed to be void ab initio. The translation may still be validly filed within an additional period of three months of expiry of the relevant periods referred to in paragraphs 2 and 3, provided that a 100% surcharge on the publication fee is paid within this additional period. (7) A validated European patent and the European patent application on which it is based shall be deemed not to have had ab initio the effects specified in paragraph 1 and Article 4(2) to the extent that the patent has been revoked in opposition or central revocation proceedings or limited in limitation proceedings before the EPO. Article 6 Authentic text of European patent applications or European patents (1) The text of a European patent application or a European patent in the language of the proceedings before the EPO shall be the authentic text in any proceedings in the Republic of Moldova. (2) However, the translation as provided for under Articles 4 and 5 shall be regarded as authentic, except in revocation proceedings, should the application or patent in the language of the translation confer protection which is narrower than that conferred by it in the language of the proceedings. (3) The applicant for a European patent or patent proprietor of a validated European patent may file, at any time, a corrected translation. The corrected translation of the claims of a published European patent application shall not have any legal effects until it has been made available to the public by the Office. The corrected translation of the specification of a validated European patent shall not have any legal effects until it has been made available to the public by the Office. CA/17/13 e 12/13

15 (4) Any person who, in good faith, uses or has made effective and serious preparations for using an invention, the use of which would not constitute infringement of the application or patent in the original translation may, after the corrected translation takes effect, continue such use in the course of his business or for the needs thereof without payment. Article 7 Rights of earlier date (1) A European patent application for which the validation fee has been paid and a validated European patent shall have with regard to a national patent application and a national patent the same prior-art effect as a national patent application and a national patent. (2) A national patent application and a national patent shall have with regard to a validated European patent the same prior-art effect as they have with regard to a national patent application and a national patent. Article 8 Renewal fees for validated European patents (1) Renewal fees for a validated European patent shall be paid to the Office for the years following the year in which the mention of the grant of the European patent was published. (2) Article 141, paragraph 2, EPC shall apply mutatis mutandis. Article 9 Applicability of the EPC The provisions of the EPC and its Implementing Regulations shall not apply unless otherwise provided in the present provisions. CA/17/13 e 13/13